Mexichem Amanco Holding S.A. de C.V.v.Honeywell International, Inc.

Patent Trial and Appeal Board

Jun 30, 2015

11850028 (P.T.A.B. Jun. 30, 2015)

Trials@uspto.gov Paper 55
Tel: 571-272-7822 Entered: June 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MEXICHEM AMANCO HOLDINGS S.A. de C.V.,
Petitioner,

v.

HONEYWELL INTERNATIONAL, INC.,
Patent Owner.
____________

Case IPR2013-00576
Patent 8,444,874 B2
_______________

Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71(d)

IPR2013-00576
Patent 8,444,874 B2

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I. INTRODUCTION
Honeywell International, Inc. (“Patent Owner”) filed a Request for
Rehearing (Paper 54, “Req. Reh’g” or “Request”) of our Final Decision (Paper 50,
“Final Dec.”).
In our Final Decision, we concluded that Petitioner demonstrated by a
preponderance of the evidence that claims 1 and 3–15, but not claim 2, of U.S.
Patent No. 8,444,874 B2 (Ex. 1001, “the ’874 patent”) were unpatentable. Final
Dec. 32. Patent Owner requests a rehearing as to our holding that Petitioner
demonstrated by a preponderance of the evidence that claims 1 and 3–15 of the
’874 patent would have been obvious over Inagaki,
1
Konzo,
2
and Bivens,
3
under 35
U.S.C. § 103. Req. Reh’g 1.
For the reasons discussed below, we deny Patent Owner’s Request for
Rehearing.
II. ANALYSIS
In a request for rehearing, a dissatisfied party “must specifically identify all
matters the party believes the Board misapprehended or overlooked, and the place
where each matter was previously addressed in a motion, an opposition, or a
reply.” 37 C.F.R. § 42.71(d).
In its Request, Patent Owner contends that we: (1) “misapprehended the
prior art and erred by relying on non-prior art statements in the ’874 patent and by

1
Inagaki et al., JP-04-110388 , published April 10, 1992 (“Inagaki”) (Ex. 1002)
(English translation Ex. 1003, Ex. 1068).
2
Konzo et al., “Winter Air Conditioning,” (The Industrial Press 1958), pp. 590–
596 (“Konzo”) (Ex. 1004).
3
Bivens et al., U.S. Pat. No. 6,783,691 B1, issued Aug. 31, 2004 (“Bivens”)
(Ex. 1005).
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Patent 8,444,874 B2

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relying on numerous other references that are not prior art”; (2) misapprehended or
overlooked “Dr. Bivens’ testimony and other evidence” regarding what an ordinary
artisan would have understood regarding refrigerants, as well as testimony from
“both Dr. Bivens and Dr. Thomas, regarding the reactivity of HFOs
[hydrofluoroolefins]and POE [polyol ester] lubricants”; and (3) “failed to consider
and properly apply the Graham factors” when addressing “whether or not the
particular prior art of record disclosed the term HFC to include unsaturated HFOs.”
Req. Reh’g 1.
Regarding its first and third contentions, Patent Owner points out that the
Board found “disclosures in the ’874 patent itself” to be “persuasive on this issue”
of what an ordinary artisan would have understood the term “HFC” to mean at the
time the relevant application was filed. Id. at 4 (citing Final Dec. 8). Patent
Owner contends that, in doing so, we “overlooked the fundamental point of law
that the test for obviousness is not how the inventors understood the term ‘HFC’,
but instead how a POSITA [person of ordinary skill in the art] would have
understood” the term. Id. Patent Owner further contends that we overlooked and
misapprehended Patent Owner’s explanation that the ’874 patent included editing
errors, as well as the “nature” of evidence cited by Petitioner, where “twenty of the
twenty-one references can not be cited as prior art against the issued ’874 patent.”
Id. at 4–5.
In our Final Decision, we construed the term “trans-1,3,3,3-
tetrafluoropropene” recited in the challenged claims in view of the ’874 patent
specification, and considered whether an ordinary artisan, at the time of filing,
would have considered “trans-1,3,3,3-tetrafluoropropene” to be an “HFC,” i.e., a
hydrofluorocarbon. Final Dec. 7–9. We acknowledged that, contrary to
Petitioner’s position, Patent Owner asserted that the terms “HFC-1234ze” and
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“trans-HFC-1234ze” describe unsaturated fluorocarbons, such as trans-1,3,3,3-
tetrafluoropropene. Id. at 7 (citing PO Resp. 13). Looking at all evidence of
record before us, however, we were not persuaded that the descriptions in the ’874
patent of HFCs as “hydrofluorocarbons,” and use of the term “HFC” as
encompassing HFO compounds, corresponded to “sloppy editing” by patent
applicants. Id. at 7–8 (quoting Patent Owner Response, Paper 21, 43). Rather, we
were persuaded by evidence cited by Petitioner indicating that it was common to
refer to HFOs as HFCs, as indicated in the ’874 patent itself, as well as in
testimony by Dr. Stuart Corr (Ex. 1008 ¶¶ 17–18) and Petitioner’s witness, Dr.
Bivens (Ex. 1070/1071, 109:22–110:16). We were persuaded, as suggested by the
acronym itself, that “HFC,” referred to hydrofluorocarbons generally, i.e.,
compounds that included hydrogen, fluorine and carbon. Final Dec. 7–9. We were
persuaded that “HFC” encompassed hydrofluoroolefins, such as a
tetrafluoropropene, which included hydrogen, fluorine and carbon.
In this regard, Patent Owner asserts in its Request that we “overlooked
and/or misapprehended the direct testimony of Dr. Bivens (see Ex 2040, ¶¶ 14, 20,
and 42, cited in Paper 21 at 4–5, 13 and 45),” including where he stated in a
declaration that “HFC-based refrigerants as used in the Bivens patents were not
intended to encompass and would not have been understood by a POSITA to
encompass unsaturated haloolefins.” Req. Reh’g 6. We did not overlook such
testimony. Rather, we weighed all evidence of record, including deposition
testimony of Dr. Bivens, and were persuaded that a preponderance of the evidence
indicated that HFCs, i.e., HFC-based refrigerants generally, did not encompass
saturated compounds only, but also included unsaturated HFC-based refrigerants,
such as HFOs.
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We note, in relation to Dr. Bivens’ deposition testimony (Ex. 1070/1071,
109:22–110:16, cited in Final Dec. 9), that Patent Owner contends in its Request
that this testimony related to “the ’874 patent—not to the state of the prior art,” and
that “Standard 34” referenced by Dr. Bivens “is not in the record” and “is not prior
art to the ’874 patent.” Req. Reh’g 9–10. Nonetheless, we remain persuaded that
Dr. Bivens’ deposition testimony is consistent with a finding, based on a
preponderance of the evidence overall, that an ordinary artisan reading the Bivens
reference would have understood “HFC-based refrigeration systems” in the
Background section of that reference to refer to both saturated and unsaturated
hydrofluorocarbons, such as HFOs, including the HFO described in Inagaki. See
Ex. 1005, 1:46–50 (stating that “PAGs [polyalkylene glycols] and POEs are
suitable lubricants for HFC-based refrigeration systems”).
As discussed in our Final Decision, while the Bivens reference may have
described specific saturated HFCs in relation to its invention described therein, we
are not persuaded that an ordinary artisan reading the Background section of
Bivens, referring to “HFC-based refrigeration systems” generally, would have
interpreted “HFC” as narrowly as Patent Owner argued during trial and argues
again in its Request. Final Dec. 9–12, 14, 16–18.
Regarding its second contention, Patent Owner also contends in its Request
that we “misapprehended or overlooked testimony from both Dr. Bivens and Dr.
Thomas with respect to the reactivity of the refrigerant and lubricant.” Req. Reh’g
7–8. Patent Owner points us to testimony by Dr. Bivens stating that it was
understood generally that HFOs were too unstable, reactive, and toxic, and
therefore, “considered to be of no value as refrigerants.” Id. Patent Owner also
quotes testimony by Dr. Thomas stating that “those skilled in the art would be
dissuaded from using POEs with the fluorinated propenes of Inagaki for the same
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reason that the art had universally avoided the use of POEs with CFCs
[chlorofluorocarbons].” Id. at 8 (quoting Ex. 2042 ¶ 13). Patent Owner also refers
to a reference (chapter on “Lubricants in Refrigeration Systems” from the 1998
ASHRAE Handbook on Refrigeration, Ex. 1034) cited by Petitioner, also
addressing the chemical stability of lubricants. Id. at 8–9.
We did not overlook such testimony and evidence, or Patent Owner’s
arguments along those lines. Final Dec. 13–18. Rather, we found that the Bivens
reference taught that POE lubricant was among “suitable lubricants for HFC-based
refrigeration systems,” even if it also taught that such lubricants have problems
because “they are extremely hygroscopic.” Id. at 16 (citing Ex. 1005, 1:47–59).
We also found, for the reasons discussed above, that when Bivens referred to
“[h]ydrofluorocarbons (HFCs)” and “HFC” in the context of “HFC-based
refrigeration systems,” it referred to hydrofluorocarbons generally, as established
by a preponderance of the evidence before us. Thus, we concluded that evidence
of record established sufficiently that an ordinary artisan would have understood at
the time of filing of the ’874 patent that the term “HFC,” as used in Bivens,
encompassed HFOs, such as those disclosed in Inagaki. Id. In pointing us to
evidence that we previously considered when rendering our Final Decision, Patent
Owner does not persuade us otherwise now.
For the reasons discussed above, we are not persuaded that we
misapprehended or overlooked evidence referenced in Patent Owner’s Request for
Rehearing. Nor are we persuaded that consideration of such evidence dictates that
we alter our Final Decision as to the obviousness of claims 1 and 3–15 of the ’874
patent over Inagaki, Konzo, and Bivens.
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III. CONCLUSION
We deny Patent Owner’s Request for Rehearing.

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Patent 8,444,874 B2

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For PETITIONER:

Patrick J. Fleis
Joseph A. Kromholz
Ryan Kromholz & Manion, S.C.
IPR@rkmiplaw.com

For PATENT OWNER:

Joseph M. Skerpon
Joseph J. Berghammer
Banner & Witcoff, Ltd.
jskerpon@bannerwitcoff.com
jberghammerr@bannerwitcoff.com